SK&S in key judgments for the furniture sector


The Voivodship Administrative Court in Warsaw dismissed complaints against decisions of the Patent Office of the Republic of Poland which annulled rights from registration of industrial designs for bunk beds.

The judgments of the VAC in Warsaw represent yet another stage in the complex dispute between furniture producers concerning designs for bunk beds.

Proceedings in the matter of an annulment of industrial designs before the Patent Office of the Republic of Poland ended with a declaration of the annulment of the rights from registration of industrial designs because of the lack of an individual character of the designs. Attorneys from SK&S represented the applicant in these proceedings.

In their decisions, both the Patent Office and the VAC in Warsaw raised a number of key aspects concerning the proceedings involving industrial property. Above all they accepted as credible the evidence from printouts from websites (websites which archive Allegro auctions, as well as internet archives, e.g. Wayback Machine). On the basis of this, in conjunction with other evidence, they determined that the industrial designs constituting the subject of the dispute do not have the features of individual character since designs creating an identical general impression have already earlier been made public on, amongst others, the Internet. The owner of the designs argued that it cannot be assumed that on the archiving date the website did indeed look like it did in the archived version. The court did not agree with this argument. In this day and age of electronic sales, one cannot ignore evidence from the Internet – in extreme cases it would make it absolutely impossible to annul rights from registration of industrial designs, e.g. in situations where sales are carried out exclusively through electronic channels.

The court also addressed the issue of the possibility of an extension – a unilateral act of a party to the proceedings – of the limitation period (cut-off deadline) set by the Patent Office for filing documents. The VAC confirmed that the fact that the authority availed of the institution of the limitation period (cut-off deadline) (art. 2553 §5 of the Industrial Property Law) makes it impossible for the parties to the proceedings to submit evidence motions after the lapse of the set deadline since the limitation period (cut-off deadline) is not subject to extension by a further two months under art. 242 sec. 3 of the Industrial Property Law.

The above judgments were handed down in the context of a broader dispute between furniture producers. Earlier, in the precedential judgment of 18 February 2016, case ref. II CSK 282/15, the Supreme Court accepted the argumentation of SK&S attorneys and confirmed that in the case that the court examining a case involving a breach of a right from registration of an industrial design has doubts as to the registrability of the industrial design, then it should suspend the proceedings until such time as the proceedings in the matter of an annulment of the rights from registration of that design have ended. The Court of Appeal in Warsaw did precisely that in the said dispute. SK&S attorneys also successfully represented this same furniture producer in proceedings involving a breach of a Community design in which a legally final judgment was handed down which dismissed the claim in respect of an alleged breach and which annulled the Community design which constituted the basis for the claims.

Judgments of the VAC in Warsaw of 21 June 2018, VI SA/Wa 390/18, and VI SA/Wa 391/18.

The above proceedings were handled at SK&S by counselor Jacek Myszko, legal counsel, senior counsel; the team also included Maciej Zwoliński, legal counsel, senior counsel, Karol Gajek, patent attorney, and Mateusz Żuk, associate.